DETAILED ACTION
Notice of AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
The amendments filed 6/25/2026 have been entered.
Response to Arguments
In Applicant’s response reply filed on 7/21/2025, Applicant elected the following compound species
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which reads on claims 62-67, 69-70, 73, 78-80 and 91-92.
As discussed in the Action mailed on 8/22/2025, the closest prior art is CAS RN 1332176-80-3 (entered into STN on 9/14/2011; of record), having the following structure:
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, which differs from Applicant’s elected species in that R1 is cyclobutyl as opposed to bicyclopentanyl.
Yet, considering that CAS RN 1332176-80-3 is merely disclosed as a compound without any associated activity, there would have been no obvious reason to modify the compound by replacing the cyclobutyl of R1 with bicyclopentanyl to arrive at Applicant’s instantly elected compound species.
As such, the elected species is determined to be free of the art and non-obvious.
Accordingly, in the Action mailed on 8/22/2025, the search was expanded as called for under current Office Markush practice – a compound-by-compound search – to include at least a single additional species (M.P.E.P. § 803.02), the additionally identified species being:
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; and
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.
In Applicant’s response filed 11/21/2025, Applicant amended the claims to exclude the above prior art compounds and overcome the rejections of claims based thereon.
Accordingly, in the Action mailed on 12/11/2025, the search was again expanded as called for under current Office Markush practice – a compound-by-compound search – to include the following compound species:
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In Applicant’s response filed 3/31/2026, Applicant amended the claims to exclude the above prior art compounds and overcome the rejections of claims based thereon.
Accordingly, in the Action mailed on 5/28/2026, the search was again expanded as called for under current Office Markush practice – a compound-by-compound search – to include the following compound species:
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In Applicant’s response filed 6/25/2026, Applicant amended the claims to exclude the above prior art compounds and overcome the rejections of claims based thereon.
Accordingly, in the instant Action, the search has again been expanded as called for under current Office Markush practice – a compound-by-compound search – to include at least a single additional species (M.P.E.P. § 803.02). That species is
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wherein, in formula (I), X is S; R1 is hydroxyl; R2 is bicyclopentanyl (i.e., “wherein: (1) at least one of R1 and R2 is optionally substituted bicyclopentanyl); R3 is hydrogen; R4 is hydrogen; and m is 2 – which reads on pending claims 62-63.
Since the search has not been expanded beyond the additional species identified above, claims 64-67, 69-70, 73, 78-80 and 91-92, which are directed to the elected species but which do not include the additional species above, are objected to as indicated below, and have not been further examined.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 62-63 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Markowitz et al (WO 2020/106998).
Claim 62 is drawn to a compound of formula (I) which embraces the following compound species:
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wherein X is S; R1 is hydroxyl; R2 is bicyclopentanyl (i.e., “wherein: (1) at least one of R1 and R2 is optionally substituted bicyclopentanyl); R3 is hydrogen; R4 is hydrogen; and m is 2 – which reads on pending claims 62-63.
The compound is taught by Markowitz et al (Page 277, General Procedure B, Step 1 and Step 2). In particular, Markowitz et al teach the compound:
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in preparing “[t]he following compounds” (Paragraph 0558) – i.e., in preparing Compounds 83-313 (Pages 279-336) – wherein, in the preparation of Compounds 189 and 190 (Page 302), R3 is bicyclopentanyl (see also STN ACCESSION NUMBER 2020:1017890 disclosing CAS RN 2425646-25-7).
Accordingly, claims 62-63 are anticipated.
Claim 78 is drawn to
Claim Objections
Claims 64-67, 69-70, 73, 78-80 and 91-92, are objected to as depending from a rejected base claim. Since the search has not been expanded beyond the additional species identified above, claims 64-67, 69-70, 73, 78-80 and 91-92, which are directed to the elected species but which do not include the additional species above, have not been further examined.
Conclusion
The new ground(s) of rejection presented in this Office action are necessitated by Applicant’s amendments to the claims. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CRAIG D RICCI whose telephone number is (571) 270-5864. The examiner can normally be reached on Monday through Thursday, and every other Friday, 7:30 am - 5:00 pm ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bethany Barham can be reached on (571) 272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CRAIG D RICCI/Primary Examiner, Art Unit 1611
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